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  • PTAB Discretion Explored

    Contains 3 Component(s) Includes a Live Event on 05/23/2019 at 2:00 PM (EDT)

    This webinar will discuss...



    Speakers:  

    • Orion Armon, Cooley LLP
    • Kirby Lee, Ecolab
    • Vice Chief Judge Scott Weidenfeller, U.S. Patent and Trademark Office

    Orion Armon

    Cooley LLP

    Kirby Lee

    Ecolab

    Vice Chierf Judge Scott Weidenfeller

    U.S. Patent and Trademark Office



  • IPR Estoppel One Year After SAS

    Contains 3 Component(s) Includes a Live Event on 04/25/2019 at 2:00 PM (EDT)

    This webinar will discuss...



    Speakers:  

    • Grantland Drutchas, McDonnell Boehnen Hulbert & Berghoff LLP
    • James Hietala, Intellectual Ventures Management, LLC
    • Eliot Williams, Baker Botts LLP

    Orion Armon

    Cooley LLP

    Kirby Lee

    Ecolab

    Vice Chierf Judge Scott Weidenfeller

    U.S. Patent and Trademark Office



  • Disqualification: Lessons from Recent Cases (Recording)

    Contains 2 Component(s)

    This webinar will discuss responsibility decisions as well as the approaches taken by courts when considering disqualification of counsel

    CLE NOTICE: IPO will apply for Ethics credit for this webinar. Please note that not all states will approve for Ethics credit.

    Conflicts of interest in litigation settings plague law firms and their clients, spurred by long term trends such as the advent of megafirms, the proliferation of corporate subsidiaries, and acquisitions.  It is thought that most difficult disputes never become public.  But disqualification proceedings in courtrooms are far from rare.  This webinar will extract lessons for both law firms and their corporate clients on how to try to avoid this minefield, including by analyzing recent disqualification fights in both state and federal courts. 

    In addition to the professional responsibility issues that are implicated, the economic consequences of disqualification loom large.  Law firms can suffer damage to their reputation just by being the target of a disqualification proceeding.  In addition, disqualification can be financially costly.

    This seminar will look at professional responsibility decisions, as well as the approaches taken by courts when considering disqualification of counsel.  It will discuss whether court disqualification will generally occur solely because of an ethical violation — or whether the totality of the circumstances will be analyzed.

    Our panel includes a senior litigation counsel at a major tech company, the general counsel of a large international law firm, and an attorney who specializes in legal professional responsibility and ethics.  They will analyze recent cases with conflicts issues, including those relating to:

    • Corporate affiliations
    • Advance conflict waivers
    • Marketing conversations with prospective clients
    • Lateral hires
    • The hot potato doctrine


    Speakers:  

    • William Freivogel, Independent Consultant
    • Martin Kaminsky, Greenberg Traurig LLP
    • Deanna Kwong, Hewlett Packard Enterprise

    Martin Kaminsky

    Greenberg Traurig LLP

    serves as the general counsel of Greenberg Traurig, an international law firm with a large IP litigation practice.  Previously, Marty represented clients that included public companies, exchanges, and professional services firms and their principals in litigation, including professional responsibility matters.  He is author of “Legal and Ethical Issues Involved in Representing Affiliates or Principals of Clients.”

    Deanna Kwong

    Hewlett Packard Enterprise

    is senior IP litigation counsel within the Office of Legal and Administrative Affairs at Hewlett Packard Enterprise Company (HPE).  She and the HPE IP litigation team are responsible for managing all IP lawsuits that are filed against or by HPE worldwide.  Prior to joining HPE, Deanna was in private practice for over a decade.  Deanna serves on the IPO Damages Committee.

    Michael McCabe

    mike@ipethicslaw.com

    Michael McCabe of McCabe Law LLC represents patent and trademark attorneys, registered patent agents, and other IP professionals in matters concerning ethics, discipline, and professional responsibility. His practice includes matters before the USPTO’s Office of Enrollment and Discipline and the state bars of Maryland, Virginia, and the District of Columbia.  He is a registered patent attorney and previously was a litigation partner at two large firms.

  • Standing to Appeal from the PTAB

    Contains 12 Component(s), up to 1.00 CLE credit hours

    This webinar will answer questions about the rapidly evolving case law regarding this issue which, years after the passage of the AIA, remains partially unresolved

    Who can appeal an inter partes review?  This webinar will answer questions about the rapidly evolving case law regarding this issue which, years after the passage of the AIA, remains partially unresolved.  Our panel of experts will also address strategies for obtaining, and opposing, appellate standing.

    This year the Federal Circuit has already addressed standing on three occasions: Mylan v. Research Corp. Technologies, Momenta v. Bristol-Myers, and Amerigen v. UCB.  Cases appear to fall along a spectrum, with one end including cases where it appears clear that petitioners who were unsuccessful will not have standing and, on the other end, cases where it appears they surely will.  Many interesting cases fall in a complicated middle ground, and a number of those involve products that require a long and expensive development process, such as pharmaceuticals, biosimilars, or aircraft engines. For petitioners in those matters trying to establish appellate standing, the challenge of showing real and immediate injury in fact can difficult to navigate.

    In addition to lessons learned from recent cases, our panelists will discuss:

    • The argument that injury from IPR estoppel in future district court litigation, after a losing challenge, is enough to create standing
    • The theory that standing is created after an unsuccessful challenge because a patent impedes research
    • Other strategies for making the case for and against standing
    • The recently argued U.S. Supreme Court case of Return Mail
    • The Court’s request for the Solicitor General’s views regarding the pending petition for writ of certiorari in RPX Corp. v. ChanBond LLC
    • Procedural details for appeals related to standing

    Speakers:  

    • Neal Dahiya, Bristol-Myers Squibb Company
    • Michael Flibbert, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
    • Steven Parmelee, Wilson Sonsini Goodrich & Rosati

    Neal Dahiya

    Bristol-Myers Squibb Company

    is an assistant general counsel at Bristol-Myers Squibb, handling global patent litigations as well as business development for the IP group. Prior to joining BMS in 2012, Neal was in private practice for nine years at major law firms in New York.

    Michael Flibbert

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

    is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. As a patent litigator, Mike serves as lead counsel in inter partes review (IPR) proceedings before the PTAB, district court litigations, and Federal Circuit appeals. He served as lead counsel in a successful recent Federal Circuit appeal from an IPR proceeding, resulting in reversal of the PTAB’s decision and invalidation of all challenged claims. Mike also served as a law clerk to the Honorable Alan Lourie of the Federal Circuit.

    Steve Parmelee

    Wilson Sonsini Goodrich & Rosati

    is of counsel at Wilson Sonsini Goodrich and Rosati.  Steve is a member of the firm’s post-grant review practice representing clients before the PTAB.  Previously, Steve was managing partner of the Seattle office of Townsend & Townsend and an in-house counsel at two pharma companies.  Steve has represented both petitioners and patent owners before the Board, and in related appeals to the Federal Circuit.  He recently represented a client in an appeal of an IPR in which the Federal Circuit clarified the rights of parties joined to a petition.

  • Standing to Appeal from the PTAB (RECORDING)

    Contains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 04/04/2019

    This webinar will answer questions about the rapidly evolving case law regarding this issue which, years after the passage of the AIA, remains partially unresolved.

    Who can appeal an inter partes review?  This webinar will answer questions about the rapidly evolving case law regarding this issue which, years after the passage of the AIA, remains partially unresolved.  Our panel of experts will also address strategies for obtaining, and opposing, appellate standing.

    This year the Federal Circuit has already addressed standing on three occasions: Mylan v. Research Corp. TechnologiesMomenta v. Bristol-Myers, and Amerigen v. UCB.  Cases appear to fall along a spectrum, with one end including cases where it appears clear that petitioners who were unsuccessful will not have standing and, on the other end, cases where it appears they surely will.  Many interesting cases fall in a complicated middle ground, and a number of those involve products that require a long and expensive development process, such as pharmaceuticals, biosimilars, or aircraft engines. For petitioners in those matters trying to establish appellate standing, the challenge of showing real and immediate injury in fact can difficult to navigate.

    In addition to lessons learned from recent cases, our panelists will discuss:

    • The argument that injury from IPR estoppel in future district court litigation, after a losing challenge, is enough to create standing
    • The theory that standing is created after an unsuccessful challenge because a patent impedes research
    • Other strategies for making the case for and against standing
    • The recently argued U.S. Supreme Court case of Return Mail
    • The Court’s request for the Solicitor General’s views regarding the pending petition for writ of certiorari in RPX Corp. v. ChanBond LLC
    • Procedural details for appeals related to standing

    Speakers:  

    • Neal Dahiya, Bristol-Myers Squibb Company
    • Michael Flibbert, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
    • Steven Parmelee, Wilson Sonsini Goodrich & Rosati

    Neal Dahiya

    Bristol-Myers Squibb Company

    is an assistant general counsel at Bristol-Myers Squibb, handling global patent litigations as well as business development for the IP group. Prior to joining BMS in 2012, Neal was in private practice for nine years at major law firms in New York.

    Michael Flibbert

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

    is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. As a patent litigator, Mike serves as lead counsel in inter partes review (IPR) proceedings before the PTAB, district court litigations, and Federal Circuit appeals. He served as lead counsel in a successful recent Federal Circuit appeal from an IPR proceeding, resulting in reversal of the PTAB’s decision and invalidation of all challenged claims. Mike also served as a law clerk to the Honorable Alan Lourie of the Federal Circuit.

    Steve Parmelee

    Wilson Sonsini Goodrich & Rosati

    is of counsel at Wilson Sonsini Goodrich and Rosati.  Steve is a member of the firm’s post-grant review practice representing clients before the PTAB.  Previously, Steve was managing partner of the Seattle office of Townsend & Townsend and an in-house counsel at two pharma companies.  Steve has represented both petitioners and patent owners before the Board, and in related appeals to the Federal Circuit.  He recently represented a client in an appeal of an IPR in which the Federal Circuit clarified the rights of parties joined to a petition.

  • SEPs and the Autos: Lessons for the Internet of Things (RECORDING)

    Contains 4 Component(s), up to 1.00 CLE credit hours

    This webinar will discuss the importance and evolving legal concepts that inform negotiations in this area, as well practical ideas for improving approaches to licensing discussions

    As cars quickly adopt improved connectivity, SEP owners and those in auto-related industries find themselves at the center of new developments in technology and the law.  5G SEP owners and automakers are experiencing a unique collision in business and IP cultures.  The lessons that emerge will be useful for other industries that want to become part of the Internet of Things (IOT).

    Our panel includes the senior vice president of a patent pool of SEP owners geared to autos and the IOT, the director of IP at the leading ride-sharing company, and a law professor who specializes in standards.  They will focus on important and evolving legal concepts that inform negotiations in this area, as well practical ideas for improving approaches to licensing discussions.  Among the topics to be discussed:

    • Can SEP owners vary royalties based on device characteristics, or the level in the distribution chain, and remain compliant with FRAND?
    • How to establish a FRAND royalty in a new market with no comparable licenses
    • The strengths and weaknesses of patent pool solutions
    • The possible use of third-party experts to opine on the essentiality of patents included in standards
    • How negotiation issues between SEP owners and carmakers differ from issues involving smartphones
    • Other lessons applicable to the IOT


    Speakers:  

    • Jorge Contreras, University of Utah School of Law
    • Bill Harmon, Uber
    • Luke McLeroy, Avanci

  • Patent Term: The Impact of Recent Cases for Addressing Insights for Prosecution and Litigation (RECORDING)

    Contains 5 Component(s), up to 1.00 CLE credit hours

    This webinar will help patent owners and their counsel navigate both patent prosecution and litigation issues related to patent term.

    This webinar will help patent owners and their counsel navigate both patent prosecution and litigation issues related to patent term by drawing on insights from three recent Federal Circuit decisions: Novartis AG v. Ezra Ventures LLC, Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical, and Supernus Pharmaceuticals, Inc. v. Iancu. Some commentators believe that these decisions give patent owners a chance to obtain potentially lucrative extensions of patent term, and that they have reined in the scope of obvious-type double-patenting.

    Ezra addresses what happens when one patent expires later than another related patent due to a patent term extension. Breckenridge deals with a scenario where one patent filed earlier expires later than another due to a 1995 law that changed the length of patent terms. Supernus limited the USPTO’s ability to reduce patent term adjustment (PTA) based on delays in prosecution.

    Our panel has vast experience with issues relating to PTA and patent term extension (PTE). It includes an in-house counsel at a medical device manufacturer, a patent prosecutor in biotech and pharma, and a life science patent litigator who represents both innovator and challenger entities. They will discuss:

    • Strategies for obtaining PTA/PTE at the USPTO, including deciding which of multiple patents covering a product are best suited for PTE
    • How to try to avoid terminal disclaimers
    • Options for applicants with pending patent applications
    • The remaining threat of double-patenting challenges in litigation


    Speakers:  

    • Jack Brennan, Fish & Richardson, P.C.
    • Jeff Hohenshell, Medtronic, Inc.
    • Nicholas Mitrokostas, Goodwin Procter, LLP

    Jack Brennan

    Fish & Richardson, P.C.

    Jack Brennan is a principal in the New York office of Fish & Richardson P.C.  His practice emphasizes patent prosecution, opinions, due diligence, and client counseling in the fields of biotechnology and pharmaceuticals.  Several years ago, Jack successfully challenged the way the U.S. Patent and Trademark Office calculates Patent Term Adjustment for patents resulting from national stage filings under 35 U.S.C. 371.  He holds a Ph.D. in genetics.

    Jeffrey Hohenshell

    Medtronic, Inc.

    is a senior patent attorney at Medtronic. An experienced patent prosecutor and strategist, he has had success invalidating for double patenting several patents covering patient-monitoring systems that were asserted against Medtronic.

    Nicholas Mitrokostas

    Goodwin Procter LLP

    is a patent litigator and partner in Goodwin Procter’s IP Litigation group.  Nick has extensive trial and PTAB experience representing clients in the pharmaceutical and biotechnology industries in patent and antitrust litigation.  He represents both innovator and challenger entities, is an editor of the Biosimilars Reference Guide, and co-leads a biosimilars blog, www.bigmoleculewatch.com.

  • Strategies for Addressing Patent Venue Issues (RECORDING)

    Contains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 02/28/2019

    This webinar will discuss important Federal Circuit decisions since TC Heartland regarding venue.

    Patent venue issues continue to be the subject of much interest ‒ and litigation. This webinar will look at important Federal Circuit decisions since TC Heartland regarding venue. The panel will also give tactical tips regarding still open questions — and common battles in district courts.

    Most recently, earlier this month, the Federal Circuit refused to rehear en banc Google’s petition for a writ of mandamus that contested a decision in the Eastern District of Texas that had found venue based upon the fact that Google servers are housed in third-party facilities in the district.  The dissenting opinion stated, however, that there is “growing uncertainty among district courts and litigants as to the requirements of § 1400(b) when conducting business virtually through servers and similar equipment...”

    Our panel will not only review recent cases, but will provide insights on strategies to address venue issues.  It includes an in-house counsel who has overseen a lengthy venue fight, a litigator who won a Federal Circuit case creating new law on venue, and an expert on Federal Circuit practice and policy.  Among the subjects they will discuss are:

    • Considerations for defendants when weighing the risks of a potentially unfriendly venue vs. the cost of challenging venue
    • Conflicting district court fact-­intensive decisions over the § 1400(b) “regular and established place of business” inquiry
    • How best to approach open issues such as waiver and time period in determining venue


    Speakers:  

    • John Dragseth, Fish & Richardson, P.C.
    • Eileen Hunter, 3M Innovative Properties Co.
    • Charlie McMahon, McDermott Will & Emery

    Jack Brennan

    Fish & Richardson, P.C.

    Jack Brennan is a principal in the New York office of Fish & Richardson P.C.  His practice emphasizes patent prosecution, opinions, due diligence, and client counseling in the fields of biotechnology and pharmaceuticals.  Several years ago, Jack successfully challenged the way the U.S. Patent and Trademark Office calculates Patent Term Adjustment for patents resulting from national stage filings under 35 U.S.C. 371.  He holds a Ph.D. in genetics.

    Eileen Hunter

    3M Innovative Properties Co.

    is Senior IP Counsel at 3M. She manages IP disputes globally, which include patent litigation venue disputes within the U.S. She also serves on 3M’s Global Trade Secret Protection Program task force. Eileen was a Partner at Faegre Baker Daniels and clerked for the Eighth Circuit Court of Appeals. She is a vice chair of IPO’s Litigation Committee.

    Charlie McMahon

    McDermott Will & Emery

    is a Partner at McDermott Will & Emery. His practice focuses on IP litigation. He successfully convinced the Federal Circuit to vacate an Eastern District of Texas ruling that ZTE, which had had contracted with a call center in Plano, Texas, could be sued in the district. In that case, the Federal Circuit clarified that, upon motion by the defendant challenging venue in a patent case, the plaintiff bore the burden of establishing proper venue.

  • Tech Transactions after Helsinn (RECORDING)

    Contains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 02/13/2019

    This webinar will discuss the Supreme's Court decision last month in Helsinn v. Teva highlights.

    The Supreme Court’s decision last month in Helsinn v. Teva highlights the importance of carefully evaluating the structure of technology-driven investments, joint ventures, joint development agreements, and other supply arrangements to minimize the likelihood that a conditional transaction will be characterized as an offer to sell a later-patented invention. These issues are particularly applicable to companies seeking to invest in the development of emerging technologies (or pharmaceuticals) that are not yet the subject of patent applications, and the attorneys who represent them.

    Through the use of hypotheticals, our panelists will explore the impact of Helsinn and other cases related to the on-sale bar ‒ and provide important takeaways for counsel.

    They will analyze key decisions, including Barry v. Medtronic, a recent Federal Circuit opinion subsequent to Helsinn decision, which addressed both the “public use” and “on-sale” bars. They will also address the en banc Federal Circuit decision in Medicines Company v. Hospira, which may now take on additional importance. In that case, the Federal Circuit held that a supplier’s provision of “manufacturing services” did not invalidate product-by-process claims, overruling earlier decisions "to the extent language in those cases might be viewed as dictating a different result here.” But the opinion added the important caveat that the Court is not creating "a blanket 'supplier exception'.” 

    Our panelists will provide insights on the combined impact of these opinions, as well as practical tips on how to best navigate on-sale bar issues in light of them.

    Speakers:  

    • Jennifer Carnahan, Dow Chemical Company
    • Randall Colson, Haynes and Boone, LLP
    • Robert Isackson, Leason Ellis

    Jennifer Carnahan

    Dow Chemical Company

    is Senior Counsel at The Dow Chemical Co. She advises clients on strategic IP matters including agreements for joint development, licensing and nondisclosure. Additionally, she has global IP responsibility for several Dow businesses, which includes portfolio management, freedom of action assessments, and general counseling.  Earlier she worked as a patent attorney at Shell Oil Co. Jennifer holds a Ph.D. in physical chemistry. She is co-Chair of the IPO Licensing Committee.

    Randall Colson

    Haynes and Boone, LLP

    is the head of the Technology Transactions and Technology M&A Practice Groups at Haynes & Boone. He has extensive experience counseling clients with a myriad of technology and IP-related transactions, including outsourcing, software development and licensing, and cloud computing. Randy represents both providers and customers of these services. He also provides counseling on the use and procurement of patents, and due diligence related to joint ventures. Prior to law school, Randy worked as an electrical engineer designing computer hardware and software.

    Robert Isackson

    Leason Ellis

    Robert Isackson is a partner at Leason Ellis. He has a primary focus on IP litigation at the trial level, particularly patent and trade secret disputes and commercial disputes over technology issues. His practice includes appellate litigation, strategic counseling, providing advice and opinions on freedom to operate and litigation risks, and IP transactions. He is a member of IPO’s Trade Secrets and Amicus Brief Committees and was the author of IPO’s amicus brief to the U.S. Supreme Court in Helsinn.

  • Disqualification: Lessons from Recent Cases

    Contains 7 Component(s), up to 1.00 CLE credit hours

    This webinar will discuss responsibility decisions as well as the approaches taken by courts when considering disqualification of counsel

    CLE NOTICE: IPO will apply for Ethics credit for this webinar. Please note that not all states will approve for Ethics credit.

    Conflicts of interest in litigation settings plague law firms and their clients, spurred by long term trends such as the advent of megafirms, the proliferation of corporate subsidiaries, and acquisitions.  It is thought that most difficult disputes never become public.  But disqualification proceedings in courtrooms are far from rare.  This webinar will extract lessons for both law firms and their corporate clients on how to try to avoid this minefield, including by analyzing recent disqualification fights in both state and federal courts. 

    In addition to the professional responsibility issues that are implicated, the economic consequences of disqualification loom large.  Law firms can suffer damage to their reputation just by being the target of a disqualification proceeding.  In addition, disqualification can be financially costly.

    This seminar will look at professional responsibility decisions, as well as the approaches taken by courts when considering disqualification of counsel.  It will discuss whether court disqualification will generally occur solely because of an ethical violation — or whether the totality of the circumstances will be analyzed.

    Our panel includes a senior litigation counsel at a major tech company, the general counsel of a large international law firm, and an attorney who specializes in legal professional responsibility and ethics.  They will analyze recent cases with conflicts issues, including those relating to:

    • Corporate affiliations
    • Advance conflict waivers
    • Marketing conversations with prospective clients
    • Lateral hires
    • The hot potato doctrine


    Speakers:  

    • William Freivogel, Independent Consultant
    • Martin Kaminsky, Greenberg Traurig LLP
    • Deanna Kwong, Hewlett Packard Enterprise

    Neal Dahiya

    Bristol-Myers Squibb Company

    is an assistant general counsel at Bristol-Myers Squibb, handling global patent litigations as well as business development for the IP group. Prior to joining BMS in 2012, Neal was in private practice for nine years at major law firms in New York.

    Martin Kaminsky

    Greenberg Traurig LLP

    serves as the general counsel of Greenberg Traurig, an international law firm with a large IP litigation practice.  Previously, Marty represented clients that included public companies, exchanges, and professional services firms and their principals in litigation, including professional responsibility matters.  He is author of “Legal and Ethical Issues Involved in Representing Affiliates or Principals of Clients.”

    Deanna Kwong

    Hewlett Packard Enterprise

    is senior IP litigation counsel within the Office of Legal and Administrative Affairs at Hewlett Packard Enterprise Company (HPE).  She and the HPE IP litigation team are responsible for managing all IP lawsuits that are filed against or by HPE worldwide.  Prior to joining HPE, Deanna was in private practice for over a decade.  Deanna serves on the IPO Damages Committee.